Subject-matter which extends the protection

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Chapter 1. Principle

This principle mentioned inA123 (3) EPC applies only after delivery.

Once a patent is issued, an act of a third party that does not constitute an infringement can not become an infringement because of an amendment made after the grant (T1149 / 97 and Directives H-IV 3.1) even if the description would support such a modification.

Chapter 2. Basis of assessment

The range extension must be viewed in relation to the previous game (H-IV Guidelines 3.3) that this one

• the issued one;
• that maintained modified after opposition;
• or that resulting from a limitation.

Chapter 3. Examples

Section 3.1. Amendment of claims

3.1.1. Principle

This is the simplest case: if a limitation is removed (respectively replaced) in a claim, the protection conferred by the claims s & #8217; increases (respectively, moves) and therefore contravenes l & #8217;A123 (3) EPC (Directives H-IV 3.1).

At first sight, but without certainty, this only applies to independent claims.

It is possible to replace a restrictive wording with another less restrictive wording if (T371 / 88):

• this allows to solve problems of clarity ;
• it is clear from the application that the less restrictive embodiment forms part of the invention and that there has never been any question of excluding it.

It is possible to replace in a claim a piece of information inaccurate by the exact information that is present throughout the rest of the application (T108 / 91).

3.1.2. Case of a non-limiting characteristic

One wonders what happens when a non-limiting feature is removed. 

This can happen especially if a feature is aimed at an object that is not the one claimed (eg "remote control suitable for use on an OLED television" - the deletion of the "OLED" feature has a priori no impact on the remote control).

In this case, and normally, there is no extension of the protection.

Nevertheless, it is necessary to have a holistic interpretation of the claim (ie to analyze the claim as a whole by seeking the goal of the writer) (T1825 / 13).

For example, a licensee sought to delete the term & #8220; heat & #8221; in claim & #8220;quality control device for printing a printer, in which the printer includes two drying devices for drying the ink in heat& #8220 ;. His argument was the fact that the printer that dried on heat was & #8220; outside the & #8217; invention & #8221; and therefore the characteristics thereof were non-limiting of the device.

Chamber n & #8217; is not of this opinion since, for it and according to the description, the claim must be understood as covering the printer & #8220;printer with a print quality control device #8217; printing and two drying devices for drying ink with heat". Therefore the deletion of "in the heat"ContravenesA123 (3) EPC.

Section 3.2. Limiting a characteristic in an "open" composition

Imagine the following situation in which the claim includes "the composition includes less than 5% of metal salts” .

If this characteristic is changed to "the composition includes less than 5% salts metal zinc" , there exists a scope extension behind this apparent limitation (T1360 / 11 or T287 / 11).

Indeed, the copper salts (for example) whose content was limited in the first formulation are no longer limited.

The same situation happens if we have the characteristic "the composition comprises less than 5% of metal salts chosen from copper or zinc salts"Which is limited"the composition comprises less than 5% of metal salts chosen from copper salts or zinc": Zinc salts can now be present in any proportion.

Section 3.3. Change of categories of claims

3.3.1. Principle

A change of category is not necessarily inadmissible within the meaning of theA123 (3) EPC (G2 / 88).

3.3.2. Acceptable changes

Are eligible:

• product claim → product use claim without manufacture of other products (HV Directives 7.1)
• product claim → claim to manufacture this product that leads only to that product (HV Directives 7.2 and T5 / 90)
• claiming a process using a product → claiming use of the product to implement the process (T332 / 94 and HV 7.4 guidelines).

3.3.3. Cases of unacceptable changes

Not eligible:

• product claim → product use claim with manufacture of other products (because these other products would then be protected via theA64 (2) EPC) (T1471 / 14, HV Directives 7.1);
• product use → product (HV Directives 7.3, T86 / 90);
• claiming a method for operating a device → product claim (because other uses of the device are then covered) (T82 / 93unless all the features of the product were contained in the original claim HV Directives 7.3, T378 / 86 and T426 / 89);
• claim to manufacture a product → claim for use of the product (T98 / 85) (HV Directives 7.1).

Section 3.4. Modification of the description / drawings

Changes to the description and drawings may also extend the protection conferred on claims by interpreting them

• of the'A69 EPC (T1149 / 97, G1 / 93, H-IV 3.2 Guidelines) and
• its interpretative protocol (which is an integral part of the EPC, A164 (1) EPC).

It is therefore forbidden to add in the course of opposition or during limitation a part of the description or drawings which had been deleted during examination (H-IV Guidelines 3.4).

decision T241 / 02 to moderate this prohibition by indicating that this is possible if the holder seeks to overcome a lack of description.

In addition, if the licensee modifies to provide drawings in order to hand over those originally filed, there may also be a range extension (T1360 / 13), in particular in the case where the preceding figures were more & #8220; obscure & #8221;, therefore less limiting.

Chapter 4. Inescapable trap A123 (2) -A123 (3)

Section 4.1. Principle

If the applicant / holder has limited his application / patent with a technical feature not disclosed by the application as filed (and therefore contrary toA123 (2) EPC), it will not be able to remove it without extending the scope of its protection (which would be contrary to A123 (3) EPC) (G1 / 93, H-IV 3.5 Guidelines).

Of course, this characteristic must be a technical characteristic.

It is not possible to avoid this pincer by removing the feature and limiting the scope with a disclaimer (T1180 / 05).

Section 4.2. Exceptions concerning non-technical characteristics

It may happen that the claims are limited, during the procedure, in a non-technical way (eg restriction of the claimed method to only certain times, or to certain parameters only).

In that event, the Boards of Appeal seem to consider that those limitations are not prohibited by theA123 (2) EPC (T1779 / 09): the principle seems here to avoid the holder to fall into the "pincer" of A123 (2) EPC and A123 (3) EPC.